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Left Empty Handed: Value Shut Down on Written Prior Art, Highlighting Importance of System Art

System art is of increasing importance in patent disputes despite being frequently overlooked or “left for later” in many cases.  A recent decision in the Ironburg Inventions v. Valve Corp. case highlights the importance of system prior art, particularly as IPR success rates have dropped from their high points in 2012-15.

In the Valve dispute, multiple IPRs were filed to invalidate Ironburg’s asserted claims.  While some grounds were instituted and others were not, the end result of Valve’s PTAB challenges was the survival of multiple asserted claims.

Ironburg moved on inter partes review estoppel to preclude Valve from continuing to assert written prior art grounds and the court granted the motion, wiping away Valve’s invalidity arguments in the litigation.  This was an even more crippling blow given Valve was earlier denied leave to add a system art controller to its invalidity contentions in the case, when the judge ruled Valve had not been diligent.

The recent order is just another example of the importance in developing twin paths for invalidity in patent disputes: (1) uncovering the best written prior art and carefully preparing well-reasoned IPR petitions, and (2) investigating and compiling system prior art that can be used persuasively with a jury and that is immune to any inter partes estoppel preclusion.

While having top-notch IPR counsel is still critical for quickly and efficiently resolving patent disputes, it is not the only criteria.  In the video game (and related systems and controllers) space, the need for investigating and compiling system prior art is even greater than other industries, given functionalities are frequently not discussed in detail in written materials in comparison to actual systems and games.  While timely compiling admissible system art can be tricky and has tripped up numerous litigation teams (authenticating source code, version controls, historical operating systems and machines), it is more important than ever in video game cases given the possibility that at least one asserted claim may survive PTAB challenges and the level of jury engagement that system art provides.

Copyright © 2020, Sheppard Mullin Richter & Hampton LLP.

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About this Author

Harper Batts, Sheppard Mullin, Patent lawyer
Partner

Harper Batts is a partner in the Intellectual Property Practice Group in the firm's Silicon Valley office.

Areas of Practice

Harper has more than a decade of experience as an intellectual property litigator and client counselor. Numerous Fortune 50 clients have relied upon his experience to represent them in highly contentious patent litigation disputes in many different venues, including Texas, Delaware, California, New Jersey, Wisconsin, North Carolina, and the Federal Circuit. His experience includes leading several large joint defense groups in complex...

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Chris Ponder Intellectual Property Attorney
Special Counsel

Chris Ponder is a Special Counsel in the Intellectual Property Practice Group in the firm's Silicon Valley office.

Areas of Practice

Mr. Ponder's practice focuses on complex patent and business litigation that often involves competitors. His litigation experience includes conducting and managing fact and expert discovery, and developing claims and defenses. Mr. Ponder has extensive experience in motion advocacy, and routinely argues motions in federal court. He has taken depositions of high-level corporate executives (including a chief operating officer, a chief technology officer, and a general counsel), as well as expert witnesses. He has worked on several inter partes review proceedings related to active district court litigation. 

Mr. Ponder has taken part in jury trials involving patent infringement and other commercial claims. Intellectual property counseling matters have included assisting clients with negotiating and evaluating patent licenses, and evaluating software license agreements, and responding to trademark and copyright infringement issues.

Experience

  • Represented leading game developer in an inter partes review proceeding where the PTAB found all challenged claims unpatentable following an unsuccessful IPR challenge by a different game developer

  • Represented leading wearable device company in an inter partes review proceeding where the Patent Owner (a Wi-LAN subsidiary) disclaimed the challenged claims after institution

  • GENBAND US LLC v. Metaswitch Networks Ltd. (E.D. Tex.) – Represented GENBAND in competitor litigation involving trade secret misappropriation and unfair competition counterclaims

  • Elbit Systems Land and C4I Ltd. v. Hughes Network Systems, LLC (E.D. Tex.) –Represented defendants against claims of patent infringement involving satellite communications technologies brought by a major military contractor

  • GENBAND US LLC v. Metaswitch Networks Ltd. (E.D. Tex.) – Represented GENBAND in patent infringement countersuit brought by a competitor involving telecommunications technologies

  • GENBAND US LLC v. Metaswitch Networks Ltd. (E.D.Tex) – Represented GENBAND in patent infringement action against a competitor involving VoIP, media gateway, and session border controller technologies

Education

  • J.D., University of Houston, 2008, magna cum laude Articles Editor, Houston Law Review, Order of the Coif
  • B.S., Computer Science, University of Houston, 2004, cum laude,
  • Member of the Honors College

Clerkships

  • Law Clerk to the Honorable Roy S. Payne of the United States District Court for the Eastern District of Texas.

Admissions

  • California
  • Texas
  • United States Patent and Trademark Office
  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the Northern District of California
  • United States District Courts for the Southern and Eastern Districts of Texas
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